Introduction

Trademark registration enables the way for products and services to be uniquely identified and differentiate between products and services. The registration of a trademark grants the registered proprietor exclusive rights to use that trademark in connection with the goods or services for which it is registered. This means only the registered owner can legally use the trademark in commerce, providing protection against unauthorized use by others.

Trademark registration not only gives the trademark owner exclusive rights over his own trademark but also protects the trademark from infringements. It is necessary to build goodwill, customer loyalty and valuable assets. Trademarks in India are registered by the “Registrar of Trademarks” who is appointed by the Central government having the power to accept or reject a trademark application. 

Section 9 of the Trademarks Act, 1999 contains ‘absolute grounds for refusal of registration’ and section 11 contains provision for ‘relative grounds for refusal of registration. Additionally, Sections 12, 13, 14, and 18 may also provide grounds for opposing a registration.

However, before choosing a brand name, it is crucial to understand what can and cannot be trademarked. In this article, we shall see what cannot be trademarked in detail when one is choosing a brand name for registering a trademark.

Characteristics of a Good Trademark

A Trademark to be good and acceptable for registration should have following attributes:

  1. It should not be confusing or leading to doubts regarding the nature of the product or service;
  2. It should be simple, easy to pronounce, spell and read;
  3. It should be easier for the general public to translate if it’s in another language;
  4. It should not contain any word, image or some other part which is offensive to any caste, gender, age or religion;
  5. It not be similar or deceptively identical to an already registered Trademark;
  6. The mark must be easily adaptable.

Trademark Registration in India

Absolute grounds for refusal of Trademark

The following are the absolute grounds on which a trademark can be refused:

  • Non-distinctive in nature

Marks which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person cannot be trademarked in India.

  • Characteristics of the goods or services

If any proposed trademark consists exclusively of marks or indications which serves in the trade as to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service, it cannot be trademarked in India.

 In a case the Intellectual Property Appellate Board [IPAB], held that “the words “ultra” and “perfect” are highly descriptive and laudatory. They cannot be seen as trademarks.

  • Customary

The trademarks which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade cannot be trademarked in India. 

For example, Otis’s trademark “Escalator” for moving staircases became a generic word and therefore, the Trademark Office concluded that Otis cannot use its trademark since the mark has become customary in respect of moving stairs.

  • Deceitful/Confusion

 A trademark which is of such nature as to deceive the public or causing confusion cannot be trademarked in India. 

For example:  The brand Abibas instead of “Adidas” has made a deceptively similar mark in order to confuse customers such marks would be considered infringing the right of Adidas, since it is highly deceptive. Therefore, same cannot be trademarked in India.

  • Hurtful to religious sentiments

If certain marks contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India , such mark shall not be trademarked. 

In the case of Amritpal Singh vs Lal Babu Priyadarshi And Anr. 2006 SC, the appellant had applied for registration of the mark “RAMAYAN” with the device of a crown in relation to incense sticks and perfumeries. The court observed that “no person can claim the name of a holy text as a trademark.”

  • Scandalous Matter

A mark cannot be trademarked, if it is scandalous or obscene, in any manner.

  • Prohibited under any law

A mark cannot be trademarked if its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

  • Shape of goods

Section 9(3) of the Trade Marks Act, 1999 provides that, a mark shall not be registered as a trademark if it consists exclusively of—

  1. a) The shape of goods which results from the nature of the goods themselves; or
  2. b) The shape of goods that is necessary to obtain a technical result; or
  3. c) The shape which gives substantial value to the goods.

  • Colour

Section 10 of the Act states that a trademark can be limited to a particular colour or combinations of colours. However, such limitation as to colour will only be allowed on determining the distinctive character of the mark. However, if no colour has been specifically claimed, then it shall be deemed to be registered for all colours.

  • Names/ Surnames

Names or surnames cannot be used as a trademark in India if they do not possess a distinctive character.

 In the case of Prathiba M. Singh v Singh and Associates 2014.the court observed that “‘Singh’ is a very common surname, and nobody can have a monopoly over it.”

  • Numbers

Numbers cannot be said to exclusivity to be used as a trademark, per se. In certain cases, the courts in India have concluded that numbers do not have a distinctive nature attached to them and, thereby, cannot be trademarked in India.

  • Geographical location

Geographical locations cannot be used as trademarks. In Imperial Tobacco Company of India Ltd v. Registrar of Trademarks, AIR 1968, the Calcutta High Court held that “the trade mark “Shimla” with the label is composite in character. It is a well-known hill– station of India. Its geographical signification is, therefore, plain and unequivocal.”

  • Sound

Musical notes in the form of musical notations are accepted as trademarks in India, but noises such as birds chirp cannot be a trademarked. Example of a Sound trademark is Nokia Jingle.

  • Smell

 A Smell cannot be registered as a trademark in India. It is difficult to distinguish between different smells. However, smell marks are rare breeds. There have been very few registrations of smell trademarks all over the world which include bubble gum scent for sandals, and strawberry, cherry and grape lubricants for combustion engines.

  • Identical/ similar products

Any mark which is similar to an earlier mark cannot be used as a trademark for another product. For example, “Maggi” cannot be assigned as a trademark again for noodles. There should be no unfair advantage.

Relative grounds for refusal

Section 11 of the Trademarks Act, 1999 states that a new proposed trademark shall be denied registration if it is identical or similar to an existing trademark or the goods or services associated with the new proposed mark are identical or similar to those of the earlier mark, and allowing the new mark to be registered would create a risk of public confusion or association with the earlier mark. However, Section 12 provides an exception, stating that registration may be granted in cases of honest concurrent use or other special circumstances.

Possible grounds for opposition to the registration

Filing a Notice of Opposition is the last stage before registration of Trademark. Section 21 of the Trademark Act, 1999 states that “any person” can file a Notice of Opposition against a trademark registration application, regardless of whether they have a commercial or personal interest in the matter. It is not necessary for the opponent to be a prior registered trademark owner; they could be a customer, purchaser, or member of the public likely to use the goods. 

The Section does not refer to any ground on which the opposition may be filed for filing Notice of Opposition. The opponent is thus at liberty to set up any ground which may support his opposition against the registration of the trademark under any of the provisions of the Trade Marks Act, 1999, and the Rules prescribed there under.

Below is the list of possible grounds for opposing the registration of a trademark:

  1. The trademark advertised is not registrable because it lacks distinctiveness or the ability to distinguish, failing to meet the requirements of the Act.
  2. The essential part of the trademark is a common word that describes the character or quality of the goods, and the applicant cannot claim exclusive rights to it through registration.
  3. The trademark cannot be represented graphically.
  4. The trademark is devoid of distinctiveness, meaning it cannot differentiate the goods or services of one entity from those of another.
  5. The trademark consists solely of indications that may describe the kind, quality, intended purpose, value, geographical origin, or production time of the goods or services.
  6. The trademark is composed exclusively of terms or indications that have become generic in the current language or established trade practices.
  7. The trademark is likely to deceive the public or cause confusion.
  8. The trademark contains elements that may offend the religious sentiments of any class or section of the citizens of India.
  9. The trademark includes scandalous or obscene material.
  10. The trademark:

(a) is identical to or similar to an earlier trademark, and

(b) is intended for goods or services that are not similar to those covered by the earlier trademark owned by a different party, and the earlier trademark is well-known in India. The use of the later mark would take unfair advantage of or harm the distinctive character or reputation of the earlier trademark without due cause.

  1. The use of the applicant’s mark would infringe on the opponent’s registered trademark, which could be legally restrained by the court, thus disqualifying the mark from protection in court.
  2. The applicants are not eligible for registration under Section 12 of the Act.
  3. The claimed use in the application for registration is not accurate.

Process for registering Trademark in India

  • Initial Trademark Search

Before starting with the registration process, a detailed Trademark Search is required to be conducted to ensure that the proposed trademark is unique and does not conflict with existing trademarks. Search can be carried out online through the official website of the Trademarks Registry.

  • Prepare and Draft the Trademark Application

For preparing and drafting the trademark application form (TM-A), the following information and documents are required to be collated:

  • A clear representation of the trademark 
  • Details of the applicant, including name, address, and nationality
  • Description of goods or services associated with the trademark
  • Date of first use (if applicable)
  • Power of Attorney (if filed through an attorney)
  • Digital Signature of the Applicant 

The application can be filed online through the official website or a physical application can be submitted at the nearest Trademarks Registry office.

  • Submit the Application

The trademark application can be submitted online or offline by paying the requisite fees. The fee varies depending on whether you’re an individual, a startup, a small enterprise, or a large corporation. 

  • Examination by the Trademarks Registry

The Trademarks Registry will review the application to ensure it complies with the relevant laws and regulations. They will assess the distinctiveness of the mark, potential conflicts, and other requirements.

  • Publication in the Trademarks Journal

If the Registrar finds no objections or issues with your application, your trademark will be published in the Trademarks Journal. This publication allows interested parties to oppose the registration within a specific period (usually four months).

  • Objection and Opposition Period

During the publication period, objections or oppositions can be filed by third parties against the proposed trademark. If an objection is filed, the opportunity to respond shall be granted.

  • Registration Certificate

If there are no valid objections or if you successfully resolve any objections, the Registrar will issue a Certificate of Registration for the trademark. This certificate confirms your exclusive rights to the mark.

Conclusion

The Trade Marks Act of 1999 outlines various absolute and relative grounds for considering trademark registration. Registration is absolutely prohibited when a trademark is likely to cause confusion or deception, as this serves to protect consumer interests. Similarly, a subsequent trademark that is similar or identical to an earlier trademark cannot be registered, even if the goods or services represented by both marks are identical or similar, or if there is a likelihood of public confusion. In these situations, registration will be denied. 

Trademarks hold significant value, as they represent the reputation, identity, and goodwill associated with the goods or services. The trademark and the goods/services it represents are interlinked; the mark enhances the authenticity and distinctiveness of the goods or services,  and vice versa.

Are you seeking trademark registration? At Registration Arena, our expert team is ready to assist you throughout the entire process. Contact us today to begin your Trademark Registration process in India smoothly and efficiently.